The ‘Transformation’ of Fair Use After Prince v. Cariou

Februray 2014 – Art & Advocacy, Volume 16Barry Werbin

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On November 12, 2013, the U.S. Supreme Court rejected Patrick Cariou’s petition for a writ of certiorari, effectively ending his effort to undo the Second Circuit’s controversial decision, which largely exonerated from copyright liability artist Richard Prince’s Canal Zone works that incorporated Cariou’s copyrighted photographs of native Rastafarians. In its April 2013 decision, the Second Circuit rejected the district court’s requirement that to be entitled to a copyright “fair use” defense, an allegedly infringing work must comment on, relate to the historical context of, or critically refer back to the copyrighted work.

Finding that the law imposes no such requirement, the Second Circuit held that 25 of Prince’s 30 works were entitled to the fair use defense as a matter of law because they were “transformative,” while remanding the question of the remaining five works to the district court. What remains open is whether the district court will choose to hear more evidence, or will agree with the Second Circuit’s observation that the most crucial evidence needed to determine transformativeness in assessing fair use is the works themselves.

Background

In 2000, photographer Patrick Cariou published Yes Rasta, a book of photographs that he shot while living for six years among Rastafarians in Jamaica. After seeing a copy of the book while in a bookstore in St. Barth’s, Richard Prince, a well-known appropriation artist, altered and incorporated several of Cariou’s photographs in a series of paintings and collages, which he titled Canal Zone. In 2007 and 2008, Prince exhibited these works through art dealer Larry Gagosian’s eponymous gallery, which produced and sold an exhibition catalog containing reproductions of Prince’s works featuring the Cariou photographs.

After learning of Prince’s exhibition in December 2008, Cariou sued Prince and Gagosian in the District Court for the Southern District of New York, alleging that Prince’s Canal Zone works and their Gagosian exhibition catalog infringed on his copyrights in the Yes Rasta photographs. In response, Prince and Gagosian raised a fair use defense.

Fair Use

The fair use doctrine, which is codified in the 1976 Copyright Act, seeks to strike a balance between a copyright owner’s property rights in his or her creative works, and the ability of authors, artists, and others to reference those copyrighted works as a means of expression. Under the Act, a court must consider the following four non-exclusive factors in assessing fair use:

The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

The nature of the copyrighted work;

The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

The effect of the use upon the potential market for the value of the copyrighted work.1

District Court Overwhelmingly Ruled for Cariou

After a review of the relevant fair use factors, the district court found in favor of Cariou, concluding that none of Prince’s works constituted fair use. The court based its decision in large part on Prince’s deposition testimony in which he failed to show that his work was transformative in the sense of creating new meaning. In particular, the court cited his testimony that he “do[es]n’t really have a message,” that he was not “trying to create anything with a new meaning or a new message,” and that he “do[es]n’t have any . . . interest in [Cariou's] original intent."2 That court not only granted Cariou’s motion for summary judgment on liability, but also entered a sweeping injunction against Prince and Gagosian that required them to deliver to Cariou all infringing Canal Zone works that had not yet been sold for Cariou to destroy, sell, or otherwise dispose of. The turnover and destruction order – an extreme remedy for works of art – was stayed pending an appeal.

The Second Circuit Sets a New Fair Use Standard

On appeal to the Second Circuit, Prince and Gagosian principally contended that Prince’s works were “transformative” and constituted fair use of Cariou’s original copyrighted photographs. They also argued that the district court imposed an incorrect legal standard when it concluded that to qualify for the fair use defense, Prince’s works must comment on Cariou or his photographs, or on aspects of popular culture closely associated with Cariou or the photographs.

At the outset, the Second Circuit emphasized that as the statute indicates, and as the Supreme Court stated in Campbell v. Acuff-Rose Music, Inc.3 (a seminal case involving a music parody of Roy Orbison’s Pretty Woman), the fair use determination is “a context-specific case-by-case analysis.”4 Under these circumstances, the Second Circuit rejected the district court’s requirement under the first factor that the allegedly infringing work must comment on, relate to the historical context of, or critically refer back to the copyrighted work. Finding that the law imposes no such requirement, and that a defendant’s commercial use is not dispositive either, the court held that a secondary work may constitute a fair use even if it serves some purpose other than those cited as examples in the Copyright Act’s fair use clause (e.g., criticism, comment, news reporting, teaching, scholarship, and research).

The Second Circuit also emphasized that the manner in which the copied work is used is crucial to a court’s analysis. That is, to qualify as a fair use, the copied work generally must alter the original with “new expression, meaning, or message.” In its review, the Second Circuit rejected Cariou’s request to treat Prince’s lack of testimony regarding any new meaning of his works as dispositive. Rather, the court stated there is no rule requiring a defendant to explain and defend his or her use as transformative. What is important, the court stated, is how the work in question appears to the reasonable observer.

With regard to the second factor, the court considered whether Cariou’s copyright-protected works were (i) expressive or creative, as opposed to factual or informational, and (2) published or unpublished. The court noted that while the photos indisputably were creative and published, this factor “may be of limited usefulness where,” as here, “the creative work of art is being used for a transformative purpose.”

The third factor considered by the Second Circuit was the amount and substan-tiality of the portion of the copy­righted works used in Prince’s works in relation to Cariou’s works as a whole (requiring both a quantitative and qual­itative analysis). In assessing this factor, the court said it was unclear how the district court deter­mined that Prince’s “taking was substan­tially greater than necessary” because the law does not require that the secondary artist take no more than is necessary. Rather, a court needs to consider not only the quantity but also the quality and importance of what is taken from the original work, while recognizing that the “extent of permissible copying varies with the purpose and character of the use.” In turn, the secondary use “must be [permitted] to ‘conjure up’ at least enough of the original” to fulfill its “transformative” purpose. The Second Circuit determined that although Prince used key portions of some of Cariou’s photographs, in 25 of Prince’s artworks, Prince had “transformed those photographs into something new and different.” Thus, the court found that the third factor weighed “heavily in Prince’s favor.”

In analyzing the fourth statutory fair use factor, which relates to the potential impact of the secondary work on the market for the copyrighted work, the Second Circuit found that “Prince’s work appeals to an entirely different sort of collector than Cariou’s.” As support, the Second Circuit noted that while Prince’s works were marketed to wealthy and famous collectors, such as Jay-Z and Beyoncé, Cariou neither actively marketed his works nor sold them for significant sums. Moreover, the court found that there was nothing in the district court’s factual record that suggested a diminution of Cariou’s market due to Prince’s works. Accordingly, the court found that this factor weighed in favor of Prince.

Applying these factors, the court found that 25 of Prince’s works manifested an entirely different aesthetic from Cariou’s photographs and thus were “transformative” as a matter of law. In reaching this decision, the Second Circuit cited as instructive the Seventh Circuit's decision in Brownmark Films, LLC v. Comedy Partners.5 There, the court rejected the argument that copyright infringement claims cannot be disposed of at the motion-to-dismiss stage, stating that in that case the only two pieces of evidence needed to decide the question of whether a secondary work pre­sented a parody (and was therefore protect­ed fair use) were indeed the secondary and original works themselves.

It bears noting, however, that the subject work in Comedy Partners was the popular irreverent South Park series, which is known for its “scatological humor” and frequent “comm­entary on current events and pop-culture through parody and satire.” Parody itself is a quintessential form of fair use, and was deemed protected as a form of free speech in the Supreme Court’s 1994 Campbell decision. Thus, the assessment of fair use in the context of a prominent parody that pokes fun at the very copyrighted content it incorporates is a very different, and easier, task to undertake than it is for a work of art having no parodic purpose that incorporates and modifies other copyrighted material.

The Second Circuit cautioned, however, that its conclusion in Cariou should not be taken to suggest that merely adding cosmetic changes or presenting a work in a new format alone would constitute fair use. Instead, a work has to add something new and present a fundamentally different aesthetic in order to be protected as fair use. In this context, with respect to the five Prince works that were remanded to the district court (including the one reprinted here), the Second Circuit noted that “[e]ach of those artworks differs from, but is still similar in key aesthetic ways, to Cariou’s photographs,” and “it is unclear whether these alterations amount to a sufficient transformation of the original work of art such that the new work is transformative.”

Notably, a dissent by Senior Circuit Judge Clifford Wallace (sitting by designation from the Ninth Circuit Court of Appeals in California) voiced a strong concern that the court was making its own assessments as to what constitutes “art” by ruling that the majority of Prince’s works constituted fair use as a matter of law. Instead, said Judge Wallace, the court should have remanded all the works back to the district court for reassessment of the fair use defense in light of the appellate court having clarified the applicable legal standard (i.e., that a secondary use need not “comment on” the original artist or work, or popular culture). Citing a cautionary note from the Supreme Court in the Campbell case that “‘[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work], outside of the narrowest and most obvious limits’,”6 Judge Wallace emphasized that “[i]t would be extremely uncomfortable for me to do so in my appellate capacity, let alone my limited art experience.”

Transformative Use Creep

The concept of “transformative use” originated with a seminal 1990 Harvard Law Review article by esteemed Judge Pierre N. Leval, who opined that:

the question of justification [of copying] turns primarily on whether, and to what extent, the challenged use is transformative. The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. A quotation of copyrighted material that merely repackages or republishes the original is unlikely to pass the test…it would merely ‘supersede the objects’ of the original…If, on the other hand, the secondary use adds value to the original – if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings – this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.7

Judge Leval’s comments were tempered by his own observation that “[t]he transformative justification must overcome factors favoring the copyright owner. The creator of a derivative work based on the original creation of another may claim absolute entitlement because of the transformation. Nonetheless, extensive takings may impinge on creative incentives. And the secondary user’s claim under the first factor is weakened to the extent that her takings exceed the asserted justification. The justification will likely be outweighed if the takings are excessive and other factors favor the copyright owner.”

The Supreme Court quoted Judge Leval favorably in its Campbell decision, but there the subject of music parody fit squarely within his “transformative” use construct. But on the heels of Campbell, federal courts started to more regularly decide fair use defenses by reference to whether the secondary use was “transformative,” in some cases applying an expansive view of transformative use, especially in the context of the first fair use factor, and minimizing the application of the other three statutory factors (or having a finding of transformative use essentially overwhelm all the factors).

Bear in mind that the Copyright Act itself reserves to the copyright owner the exclusive right to create “derivative works,” which are works “based upon one or more preexisting works … [in] any other form in which a work may be recast, transformed, or adapted.”8 (Emphasis added). This is the only place in the Copyright Act where the word “transform” appears. Thus, while derivative works may often be transformative, in the post-Campbell fair use world, more and more “transformative” uses have been deemed non-infringing fair use, even if they qualify as derivative works.

What Does This Mean to the Creative Arts Community?

The Second Circuit’s decision has created panic in those circles traditionally protective of copyright, but also has instilled a greater sense of freedom to create by appropriation in artists and creators who build on others’ content without fear of liability, at least within the jurisdiction of the Second Circuit (which includes art-centric New York, Connecticut, and Vermont). Based on the Second Circuit’s decision, it is presumably now up to courts to determine how a reasonable observer would assess the transformative nature of a secondary work in assessing a fair use defense. At least within courts in the Second Circuit, this determination may now be made in the absence of any statement of meaning or intent from the allegedly infringing artist himself. As newly minted arbiters of potentially “transformative” works of art, judges will be looking more to the subject works themselves on their face to determine fair use.

Perhaps some courts will start to pay more heed to Judge Leval’s own limitations on his theory that “extensive takings may impinge on creative incentives” and thus undercut the public policy upon which our copyright law is based, namely that “the use must be of a character that serves the copyright objective of stimulating productive thought and public instruction without excessively diminishing the incentives for creativity.”9 On the other hand, the creative arts have historically built upon that which came before, so the fundamental focus must remain on the core policy of providing incentives for new creativity that will continue to build on the past, while protecting the property and commercialization/monetization rights of original copyright owners in a manner that is fair and equitable. This is the balancing challenge that will continue to face the courts and perhaps Congress, and one they will continue to struggle with, especially in a digital world that easily facilitates the creation of “transformative” works based on preexisting copyrighted material.